Jun Yang et al.

Patent Trials and Appeals Board

Mar 10, 2020

14044279 - (D) (P.T.A.B. Mar. 10, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/044,279 10/02/2013 Jun Yang 83384870 8724
28395 7590 03/10/2020
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
MARTIN, ANGELA J
ART UNIT PAPER NUMBER
1727
NOTIFICATION DATE DELIVERY MODE
03/10/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@brookskushman.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte JUN YANG, PATRICK PIETRASZ, CHUNCHUAN XU, and
SHINICHI HIRANO
____________
Appeal 2018-007413
Application 14/044,279
Technology Center 1700
____________

Before KAREN M. HASTINGS, GRACE KARAFFA OBERMANN, and
MICHAEL G. MCMANUS, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15 and 21–25. Appeal Br. 2–6. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Ford
Global Technologies, LLC. Appeal Br. 1.
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STATEMENT OF THE CASE
Appellant’s invention is directed to an oxygen reduction reaction
(ORR) catalyst. Spec. ¶¶ 2–3; Appeal Br. Claims App. 1–3. Fuel cell
vehicles use ORR catalysts. Spec. ¶ 2. Appellant’s ORR catalyst comprises
a graphitized carbon substrate, an amorphous metal oxide layer overlying the
substrate, and a catalyst overlying the metal oxide layer. Id. ¶ 3. The
amorphous metal oxide layer has a worm-like structure. Id.
Claims 1, 10, and 21 are independent. Claim 1 is illustrative of the
subject matter and states:
1. An oxygen reduction reaction catalyst comprising:
a graphitized carbon substrate;
an amorphous metal oxide layer overlying the substrate
and having a worm-like structure;
a plurality of junctions between the graphitized carbon
substrate and the amorphous metal oxide layer; and
a catalyst overlying the metal oxide layer and the plurality
of junctions.
Appeal Br. Claims App. 1.
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OPINION
The Examiner rejects claims 1–15 and 21–25 under 35 U.S.C. § 103
as obvious over Zhang2 in view of Sun3 and Izumiya.4 Final Act. 2–5. For
the most part, Appellant argues these claims as a group. Appeal Br. 2–6.
We select claim 1 as representative of the group. See 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant makes one additional argument regarding claim
21 (Appeal Br. 5–6), which we address separately.
The first material dispute concerns whether Zhang discloses a metal
oxide layer characterized by a worm-like structure.5 See Final Act. 4;
Appeal Br. 2. The Examiner relies on Zhang’s Figure 3 as disclosing the
worm-like structure. Final Act. 4; Ans. 6. Appellant disagrees that Zhang

2 Zhang, L., Wang, L., Holt, C. M. B., Navessin, T., Malek, K., Eikerling,
M.H., & Mitlin, D. (2010). Oxygen reduction reaction activity and
electrochemical stability of thin-film bilayer systems of platinum on niobium
oxide. The Journal of Physical Chemistry, 114(39), 16463–16474.
3 Sun et al., US 2009/0208780 A1, published Aug. 20, 2009.
4 Izumiya et al., JP 2006-228546, published Aug. 31, 2006. The Examiner
entered an English language machine translation of Izumiya into the record
on May 11, 2018. Our citations are to the English language version.
5 Appellant’s written description does not clearly define the term worm-like
structure. On that point, Appellant merely distinguishes Figure 2A (which
illustrates a worm-like structure of the metal oxide layer) from Figure 2B
(which illustrates a catalyst layer that is not worm-like). See Spec. ¶¶ 7–8,
24, 26, 31. Figure 2A may provide an illustration of one embodiment of a
worm-like structure, but the written description does not define the metes
and bounds of the term, except to describe a worm-like structure as being
“discontinuous.” See id. ¶ 26. Significantly, Appellant’s written description
does not explain the degree of discontinuity necessary to provide a worm-
like structure. See id. The term worm-like structure, moreover, does not
appear to have a well-known meaning in the art.
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discloses a worm-like structure. Appeal Br. 2. Appellant labels this as
argument (1). Reply Br. 1–2.
Appellant argues that, in Zhang, “the description of Fig. 3 is limited to
showing ‘5 nm thick platinum films on . . . three oxide supports,’” but
“Fig. 3 does not disclose or depict any structure for a metal oxide layer.”
Appeal Br. 2 (quoting Zhang 16,467, Fig. 3). In response, the Examiner
states that “in Fig. 3(b) and 3(c) of Zhang, there is a discontinuous formation
which appears to be worm-like.” Ans. 6. The Examiner, however, does not
adequately explain how Figures 3(b) and 3(c) show the metal oxide layer to
have a worm-like structure. As Appellant indicates, Zhang describes
Figure 3 as showing “platinum films on the three oxide supports.”
Accordingly, any structure shown in Figure 3(b) and (c) would appear to be
the structure of the platinum overlayer – a structure not relevant to the claim
term at hand. See Zhang 16,466 (explaining that in Figure 3, the “bare oxide
surfaces are relatively uniform . . . , with the observed surface morphology
being due to the Pt overlayer”).
That does not end the inquiry, however, because the Examiner
presents an alternative finding that the combination of Zhang, Sun, and
Izumiya would have resulted in the metal oxide having a worm-like
structure. Final Act. 4. Specifically, the Examiner finds:
Alternatively, applicant states that nanoparticles of graphitized
carbon in the substrate promote the growth of a worm-like
structure in the overlying metal oxide layer (see instant
specification, para. 25). Since Zhang, as modified by Sun and
lzumiya above, teaches that the substrate is composed of
graphitized carbon nanoparticles, the amorphous metal oxide
deposited on that substrate will form a worm-like structure.
Id.
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Appellant presents three arguments—labeled (2) through (4)—in
response to that alternative finding. Reply Br. 1–3. In argument (2),
Appellant asserts that the Examiner’s rejection relies on Appellant’s
disclosure as a source of motivation for combining the three prior art
references and, therefore, represents an exercise of impermissible hindsight.
Appeal Br. 3; Reply Br. 1–3. We disagree with Appellant that the Examiner
has used Appellant’s disclosure as a source of the motivation to combine
(Reply Br. 3). The Examiner articulates rational reasons, grounded in
specific teachings of Sun and Izumiya, for combining those references with
Zhang. See Final Act. 3 (citing Sun ¶¶ 34, 42, 69; Izumiya Abs.) (relying on
Sun’s teachings that nano-sized graphitized carbon particles are suitable for
use in fuel cells and have high surface areas, high durability, and corrosion
resistance, and Izumiya’s teaching as to improved catalyst capability at
lower costs, in providing reasons to combine Sun and Izumiya with Zhang).
The Examiner may use Appellant’s disclosure to show that a claim
limitation is the natural result of a combination of elements taught in the
prior art. See Hospira, Inc. v. Fresenius Kabi USA, LLC, 946 F.3d 1322,
1329–30 (Fed. Cir. 2020) (explaining that “the work of the inventor or the
patentee can be used as the evidence of inherency,” which, in the context of
obviousness, may demonstrate that a claimed feature is “the natural result of
the combination of elements explicitly disclosed by the prior art” (quoting
Par Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir.
2014))). Here, the Examiner finds that the combination of Zhang and
Izumiya teaches the amorphous metal oxide, and the combination of Zhang
and Sun teaches the graphitized carbon substrate composed of nanoparticles.
Final Act. 3. Appellant does not show that the Examiner reversibly erred by
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relying on a statement in the Specification indicating that the specified
worm-like structure is the natural result of the combination of prior art
elements (namely, depositing an amorphous metal oxide onto a substrate
composed of graphitized nanoparticles). On that point, the Examiner states
cogent reasons (independent of Appellant’s disclosures) why the prior art
would have suggested the combination (and, thereby, the inherent result).
In argument (3), Appellant contends that the Examiner fails to
demonstrate that a worm-like structure is a latent property of the prior art
combination. Appeal Br. 3; Reply Br. 1. Similarly, in argument (4),
Appellant states that the Examiner fails to provide a basis in fact or technical
reasoning to show that the worm-like structure is inherent or necessarily
present in Zhang. Appeal Br. 3–4; Reply Br. 1. As the Examiner observes,
however, Appellant’s Specification indicates that a worm-like structure is
the natural result when an amorphous metal oxide is deposited on a substrate
of graphitized nanoparticles. Spec. ¶ 25 (the substrate “can promote the
growth of . . . a worm-like structure in the overlying metal oxide layer . . .
due to the nanoparticle arrangements to be coated”).
Appellant does not address the statement upon which the Examiner
relies (Spec. ¶ 25). Accordingly, we find no basis on this record for
concluding the Examiner reversibly erred in construing the statement as
sufficient to demonstrate that a worm-like structure is the natural result of
the combination of prior art elements taught in Zhang, Sun, and Izumiya.
See Par Pharm., Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1195–96 (Fed.
Cir. 2014) (it may be appropriate “to rely on inherency to establish the
existence of a claim limitation in the prior art in an obviousness analysis”
where the limitation at issue is “the natural result of the combination of
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elements explicitly disclosed by the prior art.”); see also Ex parte Obiaya,
227 USPQ 58, 60 (BPAI 1985) (“The fact that appellant has recognized
another advantage which would flow naturally from following the
suggestion of the prior art cannot be the basis for patentability when the
difference would otherwise have been obvious.”).
Appellant presents three additional arguments—labeled (5)
through (7)—in contesting the Examiner’s rejection. Reply Br. 1–2. In
argument (5), Appellant asserts that combining the disclosure of Zhang with
that of Izumiya does not result in a graphitized carbon substrate. Appeal
Br. 4; Reply Br. 1. The Examiner, however, relies on Sun—not Zhang and
Izumiya—for teaching the graphitized carbon substrate. See Final Act. 3.
Appellant’s argument (5) is not persuasive because it does not account for
the entirety of the combined teachings of Zhang, Sun, and Izumiya. See In
re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) (stressing that
nonobviousness cannot be established by attacking the disclosures of
individual references but must take account of what the combined
disclosures of the applied prior art references fairly would have suggested to
the ordinarily skilled artisan).
Appellant also argues that “by using Izumiya with Zhang, you would
need to replace one form of an oxide layer with another.” Appeal Br. 4.
Appellant, however, does not specifically rebut the Examiner’s reason for
making the replacement. See Final Act. 3 (“improve catalyst capability at
lower costs”); Appeal Br. 4.
In argument (6), Appellant contends that Zhang does not disclose or
suggest the formation of a catalyst on the junctions between NbOx and
graphitic carbon. Appeal Br. 4–5; Reply Br. 1–3. However, Appellant does
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not dispute the Examiner’s interpretation of the term junction to be “a state
of being joined; union; a place or point where two or more things meet or
converge” (Final Act. 4; Ans. 5, 7). Applying that interpretation, the
Examiner reasonably found that a plurality of junctions would occur
between the carbon substrate and niobium oxide layer in Zhang because the
niobium oxide layer is deposited onto the carbon. See Zhang 16,464
(“niobium oxide films were deposited onto the [glassy carbon] supports”).
Accordingly, because the platinum catalyst overlays the niobium oxide layer
(see id. at 16,466), and because the junctions are directly beneath the
niobium oxide layer, the catalyst overlays the junctions.
In argument (7), Appellant alleges that Izumiya does not disclose “an
amorphous metal oxide layer of 100% niobium oxide” as recited in claim 21.
Appeal Br. 5–6; Reply Br. 2–4. Appellant argues that Izumiya teaches a
mixture of an amorphous metal oxide and a metal catalyst, and a mixture is
not a pure metal oxide. Appeal Br. 5 (citing Izumiya Abs.); Reply Br. 4.
The Examiner’s rejection, however, does not propose substituting Izumiya’s
mixture of a metal oxide and metal catalyst for Zhang’s metal oxide. Rather,
the Examiner proposes modifying Zhang’s metal oxide to make it
amorphous. See Final Act. 3 (finding that it would have been obvious “to
employ an amorphous metal oxide in the ORR catalyst of Zhang”). In any
event, the Examiner additionally relies on claim 2 of Izumiya, which states
that the metal oxide and the metal unify in layers. Ans. 7 (citing Izumiya
Claim 2). Appellant does not adequately explain why a layer of metal oxide
would not be entirely metal oxide. See Reply Br. 3–4.

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CONCLUSION
We affirm the Examiner’s decision to reject claims 1–15 and 21–25.
Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–15 and
21–25
103 Zhang, Sun,
Izumiya
1–15 and
21–25

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED